The Signals Given by a Trademark Disclaimer

A trademark disclaimer is  something commonly made by trademark applicants, and they send important signals to trademark searchers. The John M. Fickewirth Associates Insurance Services case is a good example of the consequences trademark owners face when they voluntarily disclaim matter from their trademark applications. Optimum Group Inc. registered the mark OPTIMUM for “underwriting, brokerage and management of all types of life insurance and reinsurance; and actuarial consulting services” in 1996 (i.e., over 20 years ago). Optimum Group renewed the OPTIMUM registration as recent as 2017 for another 10 year term.

John M. Fickewirth Associates Insurance Services filed a services mark application for the virtually identical mark OPTIMUM BENEFITS PACKAGE for “insurance administrative services, insurance brokerage services, insurance underwriting services in the field of life, health, accident, disability and longterm care insurance.” John M. Fickewirth disclaimed the terms BENEFITS PACKAGE.

In this case, John M. Fickewirth’s primary argument was that the Trademark Office improperly dissected its mark and did not consider it in its entirety. A trademark disclaimer is an applicant’s statement that it does claim the exclusive right to, most often, certain terms apart from the mark as a whole. In other words, others are free to use the disclaimed terms for the same goods or services. Most of the time, a trademark disclaimer is made to buy peace with the Trademark Office in order to move a pending application through the examination process. But there is significance trademark searchers need to be aware of beyond the ability to use the disclaimed words.

There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. Disclaimed matter that is descriptive of or generic for a party’s goods or services is typically less significant or less dominant when comparing the marks at issue.

John M. Fickewirth acknowledged that the dominant portion of its mark was OPTIMUM with the trademark disclaimer of the words BENEFIT PACKAGE. Therefore, it was not improper for the Trademark Office to afford more weight to the OPTIMUM term when determining the similarity of the marks. As trademark searchers, we need to pay attention to any trademark disclaimer made by a trademark applicant to determine what the dominant portion of a mark may be.

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